Ex parte Chapman

Board of Patent Appeals and Interferences

Mar 18, 1999

08276436 (B.P.A.I. Mar. 18, 1999)

Application for patent filed July 18, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte NICHOLAS J. CHAPMAN
__________
Appeal No. 96-4149
Application 08/276,4361
___________
ON BRIEF
___________
Before MEISTER, STAAB and GONZALES, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
Appeal No. 96-4149
Application 08/276,436
2
rejection of claims 1 to 7, all the claims currently pending
in the application. An amendment filed subsequent to the
final
rejection (Paper No. 6, filed April 1, 1996) has not been
entered. See the examiner’s advisory letter (Paper No. 9,
mailed April 25, 1996).
Appellant’s invention pertains to a method and apparatus
for securing, and preventing violent movement of, heavy
objects, such as water heaters or other appliances, in the
event of an earthquake. Claim 1, a correct copy of which can
be found in the appendix to the supplemental examiner’s answer
(Paper No. 12, mailed April 18, 1997) is representative of the
appealed subject matter.
The references of record relied upon by the examiner as
evidence of anticipation are:
Horvath 4,955,573 Sept. 11,
1990
Mayr 5,020,760 Jun.
4, 1991
Daubenspeck 5,190,260 Mar. 2,
1993
Appeal No. 96-4149
Application 08/276,436
The final rejection (Paper No. 4, mailed October 30,2
1995) also included a rejection of claim 3 under 35 U.S.C. §
112, second paragraph, however, this rejection has since been
withdrawn by the examiner. See page 2 of the answer.
3
The following rejections under 35 U.S.C. § 102(b) are
before us for review:2
(1) claims 1 to 5 and 7, as being anticipated by Horvath;
(2) claims 1 to 5 and 7, as being anticipated by
Daubenspeck; and,
(3) claims 1, 4 and 6, as being anticipated by Mayr.
The rejections are explained in the examiner’s answer
(Paper No. 10, mailed July 8, 1996).
The opposing viewpoints of appellant are set forth in the
brief (Paper No. 7, filed April 1, 1996).
OPINION
We have encountered substantial difficulty determining
the metes and bounds of appellant’s claims. Independent
method claim 1 is directed to the method of restraining an
object from violent movement. The method includes the step of
fastening a first bracket to a structure "in such a manner
that the bracket can undergo slight, controlled, movement with
relation to the structure under conditions of stress to the
Appeal No. 96-4149
Application 08/276,436
4
structure." Independent apparatus claim 4 is directed to an
apparatus to restrain movement of an object associated with a
structure which is subjected to severe physical shock. The
apparatus includes a first bracket fastened to the structure
"in such manner that the structure may move a controlled
amount with relation to the position of the bracket in a
limited, and repeated manner." Independent claims 6 and 7
contain similar limitations. In appellant’s specification
(e.g., paragraph spanning pages 7 and 8), we are informed that
movement of the bracket relative to its
supporting structure is accomplished by holes 23 in the
bracket that are oversized relative to the shanks of the lag
bolts 24 to allow for sufficient movement for dampening, or
shock absorbing movement. It is clear to us, however, that
clearance between the bracket holes and the lag bolts is but
one of several factors that would have an effect on the sort
of controlled movement called for in the claims. Of paramount
importance, in our view, is the amount of friction between the
bracket and the supporting structure at their interface, which
Appeal No. 96-4149
Application 08/276,436
It is noteworthy that appellant’s specification is silent3
as to how temporary bending and distortion of the bracket
might bring about the sort of controlled movement desired
here.
5
is influenced by, among other things, the degree to which the
lag bolts are tightened and the coefficients of friction of
the materials of the bracket and the supporting structure. In
addition, appellant indicates in the brief (see page 2) that
the capacity of the brackets to temporarily bend and distort
also has an effect on the ability of appellant’s device to
control movement. Moreover, there is the question of the3
threshold amount of force required to initiate the controlled
movement.
In the present instance, appellant’s specification and
claims are devoid of any guidelines whatsoever regarding how
the
tightening of the lag bolts, the coefficients of friction of
the bracket and supporting structure, and/or the bending
strength of the brackets affect the ability of appellant’s
device to provide the desired result, i.e., the controlled
Appeal No. 96-4149
Application 08/276,436
6
movement of the bracket relative to its supporting structure
to provide a dampening effect "much like the effect of a
spring, shock absorber, or the like" (specification, page 5)
for a given force. Accordingly, we are left to speculate as
to just which combinations of brackets secured to supporting
structures by fasteners with clearance between a bracket
aperture and a fastener would fall within the metes and bounds
of the claims and which would not. Stated differently, while
any bracket and strap restraint arrangement wherein the
bracket is secured to a supporting structure by a fastener
extending through an aperture in the bracket with clearance
would meet the broad structural and step requirements of the
appealed claims, it is not clear which of these restraint
arrangements appellant intends to exclude through the use of
language such as "in such a manner that the bracket can
undergo slight, controlled, movement with relation to the
structure under conditions of stress to the structure" (claim
1) and "in such manner that the structure may move a
controlled amount with relation to the position of the bracket
in a limited, and repeated manner" (claim 4).
Appeal No. 96-4149
Application 08/276,436
7
While we might speculate as to the scope of the appealed
claims, our uncertainty provides us with no proper basis for
making the comparison between that which is claimed and the
prior art as we are obliged to do. Rejections based on prior
art should not be based upon considerable speculation as to
the meaning of terms employed and assumptions as to the scope
of the claims. See In re Steele, 305 F.2d 859, 862, 134 USPQ
292, 295 (CCPA 1962). When no reasonably definite meaning can
be ascribed to certain terms in a claim, the subject matter
does not become unpatentable over the prior art, but rather
the claim becomes indefinite. See In re Wilson, 424 F.2d
1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Accordingly, we
are constrained to reverse the examiner’s rejections of claims
1 to 5 and 7 as being anticipated by Daubenspeck, and claims 1
and 4 as being anticipated by Mayr. We hasten to add that
reversal of these rejections is not based on the merits of the
above-noted rejections, but rather is a procedural reversal
predicated on the indefiniteness of the claimed subject
matter.
Considering the examiner’s rejection of claims 1 to 5 and
Appeal No. 96-4149
Application 08/276,436
Consistent with appellant’s specification and claims, we4
interpret the terminology of the claims calling for the strap-
like member to be fastened to the bracket as meaning that
strap-like member is directly fastened to the bracket.
8
7 as being anticipated by Horvath, and claim 6 as being
anticipated by Mayr, as is apparent from the previous
paragraph, normally a
claim whose scope is indeterminate will not be analyzed as to
whether it is patentable over the prior art, since to do so
would of necessity require speculation with regard to the
metes and bounds of the claimed subject matter. Nevertheless,
with respect to the anticipation rejection of claims 1 to 5
and 7 based on Horvath and claim 6 based on Mayr, we are of
the opinion that these rejections cannot be sustained on the
basis of those portions of the claims that are understandable.
Considering the anticipation rejection based on Horvath,
each of appealed claims 1 to 5 and 7, in one form or another,
requires that the strap-like member be fastened to the
bracket. Since the strap-like member 1 and brackets 2 of4
Horvath are not fastened to each other, but are instead merely
Appeal No. 96-4149
Application 08/276,436
9
individually fastened to the support channel 10, it cannot be
said that Horvath anticipated claims 1 to 5 and 7. As to the
anticipation rejection of claim 6 based on Mayr, claim 6
requires that the first bracket has an elongated slot wider
than the width of the strap-like member to allow movement of
the strap relative to the first
bracket. Notwithstanding the examiner finding that Mayr’s
buckle 75 is configured "to accommodate the width of the belt
or strap [79]" (answer, page 4), we see nothing in Mayr that
meets the elongated slot limitation of claim 6. In light of
the foregoing, it is clear that the § 102 rejection of claims
1 to 5 and 7 as being anticipated by Horvath, and the § 102
rejection of claim 6 as being anticipated by Mayr, cannot be
sustained. We therefore reverse these rejections on the
merits.
Pursuant to our authority under 37 CFR § 1.196(b), we
enter the following new rejections.
Claims 1 to 7 are rejected under 35 U.S.C. § 112, second
paragraph.
Appeal No. 96-4149
Application 08/276,436
10
While we are mindful that appellant is free to claim his
invention in broad terms and in language of his own choosing,
we must also remember that because a patentee has a right to
exclude others from making, using and selling the invention
covered by a patent (35 U.S.C. § 154), the public must be
appraised of exactly what the patent covers, so that those who
would approach the area circumscribed by the claims of the
patent may more readily and accurately determine the
boundaries of protection involved and evaluate the possibility
of infringement and dominance. It is to
this end that the second paragraph of 35 U.S.C. § 112 is
directed. See In re Hammack, 427 F.2d 1378, 1382, 166 USPQ
204, 208 (CCPA 1970). The inquiry, as stated in In re Moore,
439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971) is:
. . . whether the claims do, in fact, set out and
circumscribe a particular area with a reasonable
degree of precision and particularity. . . . [T]he
definiteness of the language employed must be
analyzed -- not in a vacuum, but always in light of
the teachings of the prior art and of the particular
Appeal No. 96-4149
Application 08/276,436
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application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the
pertinent art.
Moreover, no claim may be read apart from and independent of
its supporting disclosure, and claim language which otherwise
appears to be definite, may take on an unreasonable degree of
uncertainty when read in light of the supporting
specification. In re Cohn, 438 F.2d 989, 993, 169 USPQ 95, 98
(CCPA 1971); In re Moore, 439 F.2d at 1235 n.2, 169 USPQ at
238 n.2.
For the reasons stated in our procedural reversal of the
standing rejections of claims 1 to 5 and 7 as being
anticipated by Daubenspeck, and claims 1 and 4 as being
anticipated by Mayr, we do not believe that the language of
the appealed claims provides adequate notice to the public of
what the claims cover to enable an accurate determination of
the boundaries of
protection involved. Specifically, the claims do not allow
one of ordinary skill in the art to determine with any
Appeal No. 96-4149
Application 08/276,436
These include: fastening a first bracket to a structure5
"in such a manner that the bracket can undergo slight,
controlled, movement with relation to the structure under
conditions of stress to the structure" as set forth in method
claim 1, and the similar language in method claim 7; a first
bracket "fastened to the structure in such manner that the
structure may move a controlled amount with relation to the
position of the bracket in a limited, and repeated manner" as
set forth in apparatus claim 4; and holes in a first bracket
that are "enlarged with respect to the size of the bolts so
that limited movement of the first bracket with respect to the
structure may be accomplished" as set forth in apparatus claim
6.
12
reasonable degree of certainty whether a device that meets the
structural and step requirements of the appealed claims also
meets the broadly worded functional statements of the claims ,5
so as to determine if, in fact, the device in question is or
is not covered by the claims.
Claims 1 to 7 are also rejected under 35 U.S.C. § 112,
first paragraph, as being based on a disclosure that fails to
comply with the enablement requirement of the first paragraph
of the statute.
The test regarding enablement is whether the disclosure,
as filed, is sufficiently complete to enable one of ordinary
skill in the art to make and use the claimed invention without
undue experimentation. See In re Moore, 439 F.2d at 1236, 169
Appeal No. 96-4149
Application 08/276,436
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USPQ at 239 and In re Scarbrough, 500 F.2d 560, 566, 182 USPQ
298, 305 (CCPA 1974). The experimentation required, in
addition to not being undue, must not require ingenuity beyond
that expected of one of ordinary skill in the art. See In re
Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976).
We find the invention as disclosed by appellant to be
both confusing and incomplete with regard to some of the
essential details of the invention, like the amount of
tightening of the lag bolts, and the particulars of the
coefficients of friction of the bracket and support structure
at their interface, required to achieve the type of "slight,
controlled, movement" (claims 1 and 7), "controlled amount" of
movement (claim 4) and/or "limited movement" (claim 6) desired
to restrain a given mass (i.e., object to be restrained) in
response to a given shock force (i.e., earthquake magnitude).
We also find appellant’s disclosure to be particularly devoid
of any guidance as to how to design a restraint that "resists,
relaxes, resists, and relaxes in successive stages until the
movement [of the structure?] has subsided" in response to a
violent physical shock, as called for in method claim 3.
Appeal No. 96-4149
Application 08/276,436
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Appellant has provided no guidance whatsoever as to the
details of the apparatus with respect to these essential
details and no insights into how one would go about
determining them for a given mass to be restrained in response
to a given shock force. In addition, given the
specification’s silence as to any bending of the brackets
acting to achieve appellant’s desired result, the discussion
on page 2 of the brief regarding bending and temporary
distortion of the brackets only adds to the confusion. Given
the ambiguity of the disclosure concerning exactly how to
provide for "a dampening effect - much like the effect of a
spring, shock absorber, or the like" or "regulated dampening
effect" (specification, page 5), we find that one of ordinary
skill in the art would be unable to make and use the claimed
invention (method and apparatus) without undue
experimentation.
SUMMARY
The rejection of claims 1 to 5 and 7 as being anticipated
by Horvath (rejection (1)) is reversed on the merits.
Appeal No. 96-4149
Application 08/276,436
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The rejection of claims 1 to 5 and 7 as being anticipated
by Daubenspeck (rejection (2)) is reversed on procedural
grounds.
The rejection of claims 1, 4 and 6 as being anticipated
by Mayr (rejection (3)) is reversed, the reversal being on
procedural grounds with respect to claims 1 and 4 and being on
the merits with respect to claim 6.
In addition, pursuant to 37 CFR § 1.196(b), new
rejections of claims 1 to 7 under 35 U.S.C. § 112, first and
second paragraphs, have been made.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, "A new ground of rejection
shall not be considered final for purposes of judicial
review."
37 CFR § 1.196(b) also provides that the appellant,
Appeal No. 96-4149
Application 08/276,436
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WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
The decision of the examiner is reversed.
REVERSED; 37 CFR § 1.196(b)
Appeal No. 96-4149
Application 08/276,436
17
)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN F. GONZALES )
Administrative Patent Judge )
LJS/pgg
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